"To examine, in the light of the relevant provisions of the covered agreements cited by the European Communities and their member States in document WT/DS176/2, the matter referred to the DSB by the European Communities and their member States in that document and to make such findings as will assist the DSB in making the recommendations or in giving the rulings provided for in those agreements."4
If there is no agreement on the panelists within 20 days after the date of the establishment of a panel, at the request of either party, the Director-General, in consultation with the Chairman of the DSB and the Chairman of the relevant Council or Committee, shall determine the composition of the panel by appointing the panelists whom the Director-General considers most appropriate in accordance with any relevant special or additional rules or procedures of the covered agreement or covered agreements which are at issue in the dispute, after consulting with the parties to the dispute. The Chairman of the DSB shall inform the Members of the composition of the panel thus formed no later than 10 days after the date the Chairman receives such a request.
SEC. 211. (a)(1) Notwithstanding any other provision of law, no transaction or payment shall be authorized or approved pursuant to section 515,527 of title 31, Code of Federal Regulations, as in effect on September 9, 1998, with respect to a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated unless the original owner of the mark, trade name, or commercial name, or the bona fide successor-in-interest has expressly consented.
(2) No U.S. court shall recognize, enforce or otherwise validate any assertion of rights by a designated national based on common law rights or registration obtained under such section 515,527 of such a confiscated mark, trade name, or commercial name.
(b) No U.S. court shall recognize, enforce or otherwise validate any assertion of treaty rights by a designated national or its successor-in-interest under sections 44 (b) or (e) of the Trademark Act of 1946 (15 U.S.C. 1126 (b) or (e)) for a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated unless the original owner of such mark, trade name, or commercial name, or the bona fide successor-in-interest has expressly consented.
(c) The Secretary of the Treasury shall promulgate such rules and regulations as are necessary to carry out the provisions of this section.
(d) In this section:
(1) The term "designated national" has the meaning given such term in section 515,305 of title 31, Code of Federal Regulations, as in effect on September 9, 1998, and includes a national of any foreign country who is a successor-in-interest to a designated national.
(2) The term "confiscated" has the meaning given such term in section 515,336 of title 31, Code of Federal Regulations, as in effect on September 9, 1998.
Section 515.305 Designated national.
For the purposes of this part, the term designated national shall mean Cuba and any national thereof including any person who is a specially designated national.5
Section 515.336 Confiscated.
As used in Section 515,208, the term confiscated refers to:
(a) The nationalization, expropriation, or other seizure by the Cuban Government of ownership or control of property, on or after January 1, 1959:
(1) Without the property having been returned or adequate and effective compensation provided; or
(2) Without the claim to the property having been settled pursuant to an international claims settlement agreement or other mutually accepted settlement procedure; and
(b) The repudiation by the Cuban Government of, the default by the Cuban Government on, or the failure of the Cuban Government to pay, on or after January 1, 1959:
(1) A debt of any enterprise which has been nationalized, expropriated, or otherwise taken by the Cuban Government;
(2) A debt which is a charge on property nationalized, expropriated, or otherwise taken by the Cuban Government; or
(3) A debt which was incurred by the Cuban Government in satisfaction or settlement of a confiscated property claim.
Section 515.527 Certain transactions with respect to United States intellectual property.
(a) Transactions related to the registration and renewal in the United States Patent and Trademark Office or the United States Copyright Office of patents, trademarks, and copyrights in which the Government of Cuba or a Cuban national has an interest are authorized.
(b) This section authorizes the payment from blocked accounts or otherwise of fees currently due to the United States Government in connection with any transaction authorized in paragraph (a) of this section.
(c) This section further authorizes the payment from blocked accounts or otherwise of the reasonable and customary fees and charges currently due to attorneys or representatives within the United States in connection with the transactions authorized in paragraph (a) of this section.
(a)(2) No transaction or payment is authorized or approved pursuant to paragraph (a)(1) of this section with respect to a mark, trade name, or commercial name that is the same as or substantially similar to a mark, trade name, or commercial name that was used in connection with a business or assets that were confiscated, as that term is defined in section 515,336, unless the original owner of the mark, trade name, or commercial name, or the bona fide successor-in-interest has expressly consented.
Section 44 (15 U.S.C. §1126). International conventions; register of marks
(b) Any person whose country of origin is a party to any convention or treaty relating to trademarks, trade or commercial names, or the repression of unfair competition, to which the United States is also a party, or extends reciprocal rights to nationals of the United States by law, shall be entitled to the benefits of this section under the conditions expressed herein to the extent necessary to give effect to any provision of such convention, treaty or reciprocal law, in addition to the rights to which any owner of a mark is otherwise entitled by this Act.
(e) A mark duly registered in the country of origin of the foreign applicant may be registered on the principal register if eligible, otherwise on the supplemental register herein provided. Such applicant shall submit, within such time period as may be prescribed by the Director, a certification or a certified copy of the registration in the country of origin of the applicant. The application must state the applicant's bona fide intention to use the mark in commerce, but use in commerce shall not be required prior to registration.
(a) Section 211(a)(1) of the OAA is inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Article 6quinquies A(1) of the Paris Convention (1967) and Article 15.1 of the TRIPS Agreement;
(b) Section 211(a)(2) of the OAA is inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Articles 2(1), 6bis (1) and 8 of the Paris Convention (1967), and Articles 3.1, 4, 16.1 and 42 of the TRIPS Agreement; and
(c) Section 211(b) of the OAA is inconsistent with Article 2.1 of the TRIPS Agreement in conjunction with Articles 2(1), 6bis (1) and 8 of the Paris Convention (1967), and Articles 3.1, 4, 16.1 and 42 of the TRIPS Agreement.
"Every trademark duly registered in the country of origin shall be accepted for filing and protected as is [in the authentic French text, telle quelle] in the other countries of the Union, subject to the reservations indicated in this Article."
"Paragraph 1 of Article 6 should be understood in the sense that no trademark may be excluded from protection in one of the States of the Union for the sole reason that it does not comply, with regard to the signs of which it is composed, with the conditions of the laws of that State, provided it complies on this point with the laws of the country of origin and that it has been properly filed there. Subject to this exception, which only concerns the form of the mark, and subject to the provision of the other Articles of the Convention, each State shall apply its domestic law."17
"This leads to the following conclusions:
Whenever a trademark is duly registered in the country of origin, the other countries of the Union are obliged to accept and protect it, even if, as regards its form, that is, with regard to the signs of which it is composed, such trademark does not comply with the requirements of the domestic legislation, subject to the additional rules, particularly the grounds for refusal or invalidation of any mark, considered on its individual merits, established in the Article. This rule will therefore apply to trademarks consisting of numbers, letters, surnames, geographical names, words written or not written in a certain language or script, and other signs of which the trademark is composed."
"Member States are equally free, regardless of Article 6quinquies, to apply to trademark applications other provision of their domestic law not concerning the signs of which a trademark is composed, such as a requirement of previous use of the mark, or the condition that the applicant must possess an industrial or commercial enterprise."23
‑ By expressly curtailing the protection of trademarks and trade or commercial names held by "designated nationals" which means basically Cuba and Cuban nationals, while granting US nationals the full enjoyment of their rights, Section 211(a)(2) creates a first level of discrimination, which constitutes the most obvious violation of the national treatment obligations contained both in TRIPS and the Paris Convention.
‑ At the second level the operation of Section 211(d)(1), which defines the term "designated national", creates a discrimination at the level of successors-in-interest. This provision does expressly deny protection to any foreign successor-in-interest to a Cuban national or Cuba, while allowing US successors-in-interest to Cuban nationals or Cuba the full enjoyment of their trademarks or trade names.
(a) Through the recognition of the right of ownership in general; and
(b) implicitly, through the recognition of the right to participate in the cultural life of a country.